This case is a trademark cancellation application filed by the plaintiff, Singapore-based Bitmain Technologies Pte. Ltd. (Bitmain Technologies Pte. Ltd.), against the defendant, Indonesian company PT VAST PALASO CYBERINDO （hereafter “PT company” ）.
The plaintiff is an affiliate of Bitmain Technologies Co., Ltd., headquartered in China. It is a world-renowned blockchain mining machine manufacturer. Since 2013, it has used the "ANTMINER" trademark to produce Bitcoin mining machines worldwide. It has long maintained a technological and market advantage in the industry, covering more than 100 countries and regions around the world.
The defendant, a local Indonesian IT company, registered five trademarks containing the "ANTMINER" element between 2017 and 2021, and sold mining machine products marked with the trademark.
In August 2024, the plaintiff Bitmain formally sued the defendant in the Commercial Court of the Central Jakarta District Court, requesting the cancellation of the defendant's trademark and confirmation of its own trademark rights.
The core of the plaintiff's claim for rescission is as follows:
1. The plaintiff claims
All the plaintiff's claims are supported; a declaration that the plaintiff is the sole owner of the “ANTMINER” trademark and has the exclusive right to use the trademark in Indonesia; declaring that the defendant's five registered trademarks were registered in bad faith; the defendant's five registered trademarks were revoked, and the defendant was required to bear all legal consequences; the defendant is ordered to comply with the terms of this ruling, cancel the five preemptively registered trademarks, and bear the corresponding legal consequences; the Court ordered the defendant to agree to the plaintiff's application for registration of the trademark "ANTMINER" in Classes 9, 35, 38 and 42 (application number: DID2024052873) filed on June 18, 2024, and to register it in the trademark register; the defendant was ordered to bear the litigation costs of this case in accordance with the law.
2. Legal basis
Pursuant to Section 76(2) of the Indonesian Trademark Law, the owner of an unregistered trademark may, after submitting a trademark application to the official, file a cancellation application in accordance with Section 76(1). The plaintiff filed a trademark application for the trademark "ANTMINER" in Indonesia in Classes 9, 35, 38, and 42 on June 18, 2024, and therefore has the right to file a cancellation application against the defendant's five preemptively registered trademarks.
In Indonesia, the deadline for filing a cancellation application for a registered trademark is five years from the date of registration. However, if the trademark was registered in bad faith, there is no time limit for filing a trade mark cancellation. The plaintiff invoked Article 21, paragraph 3, of the Indonesian Trademark Law, alleging that the defendant registered the trademark in bad faith. According to Article 77, paragraph 2, of the Indonesian Trademark Law, this cancellation application is not subject to the five-year statute of limitations.[1]
3. Reasons for revocation
Main reason 1: The plaintiff is the legal user and true owner of the trademark "ANTMINER" and has been using the trademark for a long time. The plaintiff submitted evidence of global use from 2013 to the present: media coverage; the ANTMINER S1 manual was first published in 2013; the defendant company was established in 2016, later than the plaintiff; the plaintiff and its affiliated companies have multi-national registration records for the trademark "ANTMINER", with the earliest application date dating back to 2014, much earlier than the defendant's trademark application date; the plaintiff has been using the trademark "ANTMINER" on its products in Indonesia since 2015, which is earlier than the defendant's earliest trademark application date of October 3, 2017; other relevant evidence.
Main reason 2: Defendant’s malicious behaviour: the defendant company is an Indonesian entity and was established on February 5, 2016, which is later than the plaintiff's earliest use date of the trademark in 2013 and the earliest global trademark application date in 2014; trademark Plagiarism and Imitation: the defendant's five registered trademarks clearly plagiarize and imitate the core elements of the plaintiff's trademark "ANTMINER", which is not an coincidence. The fact that the registered trademarks are identical or similar to the plaintiff's trademarks hardly constitutes coincidence (please refer to Table 1 below; the defendant admitted to infringement). In 2017, the defendant proactively stated on its website ( Antminer – Antminer Indonesia Blog ) that "ANTMINER” belongs to China's Bitmain; confusing the market: The defendant sold the plaintiff's genuine mining machines through the social media platform Instagram, disguising itself as the plaintiff's official channel.
Table 1 Comparison of the trademarks involved
|
Plaintiff's trademark |
The defendant registered the trademark |
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trademark: Applicant: BITMAIN TECHNOLOGIES PTE. LTD. Application date: June 18, 2024 Application number: DID2024052873 Category: 9, 35, 38, 42 |
Owner: PT VAST PALASO CYBERINDO Application number: D002018004514 Registration number: IDM000756538 Application date: January 29, 2018 Registration date: May 21, 2020 Category: Category 9 |
|
Owner: PT VAST PALASO CYBERINDO Application number: D002017049346 Registration Number: IDM000646829 Application date: October 3, 2017 Registration date: July 1, 2019 Category: Category 9 |
|
|
Owner: PT VAST PALASO CYBERINDO Application number: D002018004516 Registration Number: IDM000756530 Application date: January 29, 2018 Registration date: May 21, 2020 Category: Category 9 |
|
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Owner: PT VAST PALASO CYBERINDO Application number: J002017060770 Registration Number: IDM000905432 Application date: November 20, 2017 Registration date: November 2, 2021 Category: Category 38 |
|
|
Owner: PT VAST PALASO CYBERINDO Application number: J002017060764 Registration Number: IDM000928585 Application date: November 20, 2017 Registration date: December 2, 2021 Category: Category 42 |
In September 2024, the defendant filed a defense stating: the five registered trademarks owned by the defendant are legally registered trademarks; the plaintiff had no prior trademark rights in Indonesia and was therefore not eligible to file a cancellation application; the defendant's earliest registered trademark was approved for registration on July 1, 2019, more than five years after the plaintiff filed its cancellation application; the plaintiff's cancellation application has expired; Indonesian trademarks adopt the "first-to-file" principle; the plaintiff's trademark application filed in 2024 was later than the defendant's five preemptive trademark applications and should not be approved for registration; other relevant reasons, etc.
The court held that the plaintiff's trademark "ANTMINER" has been in use since 2013 and has been registered in multiple countries since 2014. This predates the defendant's trademarks in terms of both earliest use and earliest application. Each of the defendant's trademarks contains identical or similar elements to the plaintiff's trademark, constituting similar trademarks for similar goods. The defendant's use of the preemptively registered trademarks on Bitcoin mining machines in Indonesia is likely to mislead and confuse consumers, leading them to mistakenly believe that the defendant is the plaintiff's official distributor or affiliated with the plaintiff, thereby creating unfair competition and harming the plaintiff's interests. Therefore, the defendant's five trademarks were registered in bad faith.
The Commercial Court of the Central Jakarta District Court issued a judgment on November 21, 2024, partially supporting the plaintiff's claims: the court determined that the defendant's five trademarks were registered in bad faith, in violation of Article 21, paragraph 3, of the Indonesian Trademark Law; revoke the defendant’s five registered trademarks; the plaintiff was found to be the independent owner of the trademark "ANTMINER" and was entitled to continue to apply for registration of its trademark in Classes 9, 35, 38, and 42 and to use the trademark on its products in Indonesia; the defendant was ordered to bear the litigation costs of this case.
1. Legal qualification of the unregistered trademark owner to apply for revocation
Under Indonesian Trademark Law, the owner of an unregistered trademark must first submit its own trademark application before it can file a cancellation application against a preemptively registered trademark. In this case, the plaintiff had already submitted a trademark application in Indonesia before filing the cancellation application, thus satisfying the statutory requirements and effectively circumventing potential challenges to its applicant status raised by the defendant.
Practical advice: If a company does not have any prior trademark application or registration in Indonesia, it must first submit its own trademark application before filing a cancellation application for the preemptively registered trademark to meet the statutory applicant qualification requirements.
2. The 5-year limitation period for revocation of an application can be circumvented based on bad faith
In this case, the plaintiff, as the true right holder of the trademark, successfully won its trademark cancellation application by proving the defendant's bad faith registration. Under Indonesian Trademark Law, a cancellation application must generally be filed within five years of the trademark registration date. However, this five-year limitation does not apply to trademarks registered in bad faith. The defendant had registered five related trademarks, one of which had been registered for more than five years at the time the plaintiff filed its cancellation application. The plaintiff therefore focused on proving the defendant's bad faith and establishing its position as the true right holder, ultimately winning the case.
If a Chinese company discovers that its trademark in Indonesia has been preemptively registered by a third party and has been registered for more than 5 years, it may still consider conducting a multi-angle analysis and proving the malicious behavior of the preemptive registrant, and then file a cancellation application. The bad faith evidence must also include evidence from the time the applicant is filing the application, and not just current bad faith evidence.
3. Legal basis for unregistered trademark owners to file cancellation applications
In Indonesia, an unregistered trademark owner may file a cancellation application based on two separate grounds: Reason 1: The preemptively registered trademark is similar to a well-known trademark. Reason 2: The preemptive registration is filed in bad faith.
In this case, the plaintiff successfully revoked the trademark in question based on malicious preemptive registration. It is important to note that although the plaintiff submitted evidence of global prior use and multinational registrations, it did not assert well-known trademark protection; this strategic choice may be based on two considerations: some of the defendant’s five trademarks have been registered for more than five years, exceeding the time limit for revocation stipulated in Article 77 (1) of the Trademark Law; in Indonesia, it is relatively high, requiring sufficient evidence to prove that the trademark was well-known in Indonesia or abroad before the preemptive registration date. However, the plaintiff's current evidence is insufficient to support this claim.
In practice, the core elements for recognition of well-known trademarks in Indonesia are as follows:
Practical Advice: If a Chinese company lacks prior trademark rights in Indonesia, it should comprehensively evaluate the feasibility of both grounds for revocation. It is recommended to adopt a dual-track strategy, simultaneously asserting both bad faith cybersquatting and trademark well-known status (if the conditions are met). Because these are independent legal grounds, asserting them concurrently can maximize the chances of a successful revocation.
4. The key role of the chain of evidence
The plaintiff in this case has established a complete global chain of evidence (covering product brochures, social media materials, media reports, and global trademark registration lists, etc.) to fully prove the following facts: prior registration and continued use of the plaintiff's trademark worldwide; the defendant has subjective malicious intent to counterfeit.
Practical advice: Chinese companies should build their own evidence management system and establish a regular evidence retention mechanism to support potential trademark disputes. For example,
5. Application for cancellation of a registered trademark due to non-use
In 2024, the Indonesian Constitutional Court issued Decision No. 144/PUU-XXI/2023, extending the period for revoking a registered trademark for non-use from three years to five years from the date of registration. In addition to filing a cancellation application, non-use can also be used to address the issue of trademark squatting.
Practical advice: When the right holders application for cancellation based on bad faith is not well-founded and he is convinced that the registered trademark has been registered for more than 5 years and there has been no real and effective commercial use of the registered trademark in Indonesia, he may consider using the cancellation procedure based on non-use to deal with the squatting trademark. However, in Indonesia, a non-use action poses significant risks due to the inherent uncertainty of its outcomes. One of the primary risk factors is the potential for defendants to fabricate evidence of use in an attempt to counter non-use claims. This risk is particularly pronounced for products that are relatively easy to produce, such as electronic products and clothing products, where the likelihood of fabricated use is increased. Secondly, regarding the survey evidence. Cases vary on their value, some judges like to see extensive physical surveys across many cities, others pick holes in them for their obvious lack of certainty. It can be easy to waste tens of thousands on a professional survey that is not accepted.
Bad-faith trademark squatting is a serious problem in Indonesia. The perpetrators may be local Indonesian companies or individuals maliciously hoarding trademarks, or they may be local agents and related individuals of the companies. Indonesia adopts the "first-to-file principle". Chinese companies should complete trademark planning in at least core categories before their products or services enter the Indonesian market to prevent squatting. At the same time, companies should establish trademark monitoring mechanisms to identify the risk of squatting. If a third party preemptively registers a company's trademark, they should consult their own global trademark usage and registration records, consult local lawyers to assess the chances of success in opposing the squatting, and take proactive measures to safeguard their trademark rights.
In summary, Bitmain's victory demonstrates the triple necessity of combating cybersquatting in Indonesia: a proactive approach to rights planning, systematic evidence management, and precise legal procedures. This ruling provides a replicable path for companies expanding overseas to protect their rights, and is particularly significant for industries prone to cybersquatting, such as blockchain and high-tech.
[1] Article 21(3) of the Indonesian Trademark Law (No. 20/2016)
A "bad faith applicant" refers to an applicant who is reasonably suspected of applying for trademark registration with the intention of imitating, plagiarizing or copying other people's trademarks for its own commercial interests, thereby triggering unfair commercial competition and deceiving or misleading consumers.
For example, if the trademark under application is identical in words, images, logos, or color scheme to another person's trademark, or if the trademark under application has been known to the public for many years but the applicant imitates it in a manner that makes it similar to the known trademark in its main part or as a whole, this demonstrates bad faith because it can at least be inferred that the applicant intended to imitate the known trademark.
Article 76 of the Indonesian Trademark Law (No. 20/2016)
(1) Any interested person may bring an action for the cancellation of a registered trade mark on the grounds provided for in Section 20 and/or Section 21.
(2) The proprietor of an unregistered trade mark may institute proceedings under subsection (1) by filing an application with the Minister.
(3) An application for revocation shall be filed with the Commercial Court against the proprietor of the registered trade mark.
Article 77 of the Indonesian Trademark Law (No. 20/2016)
(1) An action to revoke a trademark registration may only be filed within five years from the date of trademark registration.
(2) If there is bad faith, or the trademark in question violates national ideology, laws, regulations, morality, religion, customs and social order, an application for cancellation may be filed without time limit.
Authors: Amanda Yang, Xiaotong Men, Yurio Astary, Fianka Permana
